What Does Prior Art Mean in a Patent Application
1 of the virtually common reasons the USPTO gives for rejecting claims in patent applications is prior art. Prior art can exist used to show that your invention is not "new" or "non-obvious" — and these are two of the most important requirements that determine whether your invention is patentable.
That'southward why it's important to understand what counts as relevant prior art, and how that can touch on your patent application.
WHAT'S THE DEFINITION OF PRIOR Art?
Technically speaking, what is considered prior art under U.Southward. law is defined by federal statute 35 United statesC. 102, which was virtually recently amended by the America Invents Act (AIA) — changes to the definition of prior art took effect in March 2013.
In simpler terms:Prior art is any evidence that your invention was already publicly known or available, in whole or in part, before the effective filing date of your patent application.
All the same, that'due south still a adequately wide concept. To better pivot down what prior art is (and isn't!), permit's take a deep dive into several specific examples.
WHAT COUNTS AS PRIOR Fine art?
Many people brand the mistake of bold that prior fine art is express to either existing products or issued patents. In other words, they believe (wrongly) that they're entitled to a patent for an invention simply because that invention hasn't been patented or implemented in a product even so.
Merely the range of information that counts as prior fine art is much broader than issued patents and commercial products. Generally speaking, prior art arises when someone has either made an idea bachelor to the public, or filed a patent application that was eventually published or issued as a patent.
To list some common examples, prior art can include the following:
- A product that was bachelor for sale
- Commercial use of the invention
- Articles, publications, or journals (printed or electronic)
- Presentation at a public event (a trade show, conference, etc.)
- Public noesis or utilise of the invention (e.g. demonstration)
- A previously-filed patent application (assuming the previous application somewhen becomes a published awarding or an issued patent)
What examples 1-5 have in mutual: They werepublicly available orpublicly disclosed. It doesn't matter whether the information is broadly accessible on the net — factors like target audience, language, number of copies made, and geographic location are irrelevant for publications. To apply an unlikely case, a high school textbook published only in Republic of kazakhstan could still count as prior art.
Additionally, the information must have been publicly disclosed or publicly bachelor earlier the effective filing engagement of your patent application. If your effective filing date is Sept. 1, 2017, and so a magazine article published on Aug. 31, 2017, counts as prior art — as does an expired patent from 1950. All the same, provided you lot filed on Sept. one, a demonstration of your production in Oct 2017 won't authorize as prior art.
Example half-dozen to a higher place is slightly different from the other examples though, considering a previously-filed patent application might non be publicly available or publicly disclosed at the fourth dimension you file your patent awarding. Patent applications typically remain secret for months or even years before they become public (as a published application or an issued patent).
Only a previously-filed patent awarding tin qualify as prior fine art even if it becomes public simply after your application is filed. So for example, if your effective filing date is Sept. 1, 2017, some other patent awarding that was filed on Aug. 31, 2017 counts as prior fine art — even if it's non published for several years.
WHAT DOESN'T COUNT AS PRIOR ART?
Data that becomes publicly disclosed or publicly available only afterward your application's filing engagement generally doesn't qualify as prior art. Similarly, patent applications filed after yours mostly don't qualify equally prior fine art.
Here are four other notable exceptions to the examples provided to a higher place.
ane. PUBLICATIONS THAT DON'T PROVIDE ENABLING Particular
For a publication to exist used to reject your claims for lacking novelty, it must disclose the invention with sufficient item — that is, it must offer an "enabling disclosure." Put another way, if someone with ordinary skill in the relevant field of engineering cannot effigy out how to make and use the invention from the prior disclosure, then it can't exist used every bit the basis for a Department 102 rejection.
Let's say y'all figure out how to build Atomic number 26 Homo'south suit and desire to patent it. The comic books and movies themselves tin't be used to evidence that your claims lack novelty, because although they explain what the arrange does, they don't provide enough information to enable the boilerplate skilled person to build the accommodate.
Keep in mind though that not-enabling prior artcanbe used to show that your invention is obvious.
2. Abased, Secret PATENT APPLICATIONS
Under certain circumstances, abandoned patent applications may remain confidential, disqualifying them equally prior art. For one, provisional patent applications that aren't converted to non-conditional applications are never published.
Past default, non-provisional applications are published eighteen months from filing. Nevertheless, an application will non be published if the bidder abandons it more four weeks before it's due to exist published.
Alternatively, if the application was filed only in the United States, the applicant can request not-publication — in which case the application will non be published unless and until a patent is granted.
3. TRADE SECRETS
As trade secrets are confidential by nature, they cannot be used as testify of prior fine art. So some other company's trade secret invention typically couldn't exist used as prior fine art against your patent application, fifty-fifty if the other company developed their trade undercover before you lot independently developed the same invention.
4. CONFIDENTIAL DISCLOSURES
Fifty-fifty though information technology's non advisable, in reality applied science companies often demand to disembalm their work to third parties before they file a patent application — reasons to practise this include gauging market interest, pursuing funding opportunities, and developing collaborations with other groups.
When information is shared with 3rd parties nether an obligation of confidentiality, the disclosure doesn't count equally prior art against your patent awarding. The best style to ensure that a disclosure will be considered confidential to have all parties sign a non-disclosure agreement (NDA).
WHAT HAPPENS IF I Discover PRIOR ART?
In that location's always going to be prior art for whatever invention. In the words attributed to a famous federal judge, "Only God works from nothing. Man must work with old elements." Patentability doesn't hinge on the existence of prior art.Instead, whether your invention is patentable depends on how different your invention is from the prior fine art.
There are two criteria for patentability over prior art. First, the invention must benew (or "novel" in the words of the statute) — which generally ways it tin't be identical to any unmarried product or reference. Quite but, this prevents y'all from patenting ideas that already exist in the public sphere or in previously-filed patent applications.
But at the next level, your invention needs to beinventive(or "non-obvious" in the words of the statute) — that is, more than than a lilliputian variation of prior art. That ways an invention typically can't be patented if a person of ordinary skill in the relevant field of technology could derive the invention from the prior art past making obvious changes or substitutions.
It'south also important to inform the patent office if you know of whatever prior art that's textile to the patentability of the invention claimed in your patent application. Specifically, all inventors (and anyone substantively involved with a patent application) have a duty of disclosure, candor, and good faith in dealing with the patent part. Complying with this obligation is often like shooting fish in a barrel, equally the patent role provides a specific procedure for telling them almost any relevant prior art.
HOW CAN I AVOID UNEXPECTED PRIOR ART?
In many cases, determining whether something qualifies as prior fine art and whether your invention is patentable over prior art tin can require relatively technical analysis. If you're looking to motion forward with a patent application, consider engaging a patent attorney who's familiar with your manufacture.A skilled chaser will be able to tell you the options for dealing with known prior fine art for your specific circumstance.
But at that place'south always a possibility that you lot'll meet unexpected prior art — or even accidentally create prior art against yourself! Our FREE eBook, "Prior Art and the Patent Process," discusses smart strategies y'all can utilize to minimize those risks. Download information technology now!
MINIMIZE THE RISK THAT YOU'LL Come across UNEXPECTED PRIOR ART. HERE'South WHAT SMART TECH COMPANIES Demand TO KNOW.
But what should you do if you observe prior fine art against your invention? Download our FREE eBook to notice out. Learn the post-obit:
- How does the manufacture define prior fine art?
- How can you practice an effective prior art search — and can you do information technology yourself?
- How will discovering prior art affect the claims in your patent application?
- What steps can you have to avert unexpected prior fine art?
- How can y'all avoid accidentally creating prior art against your own patents and applications?
Walk away equipped with smart strategies to navigate common prior art obstacles during the patent process.
Fill out the short class on this folio to download this eBook today!
Michael One thousand. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm'southward founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.
Source: https://henry.law/blog/what-is-prior-art/
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